In a split decision, the Federal Circuit upheld a district court finding in American Calcar, Inc. v. American Honda Motor Co. 13-1061 (9/29/2014) that Calcar’s patents were unenforceable due to inequitable conduct. The case had previously been remanded by the Federal Circuit to apply the inequitable conduct test established in Therasense. The test in Therasense requires a specific intent to deceive and materiality. Materiality is determined if but-for the undisclosed information, the USPTO would not have issued the patent. The patents related to car GPS units. The inventor had disclosed 96RL prior art system, but had not disclosed additional information including photographs and an owner’s manual.
Judge Newman voiced a strong dissent based on the fact that the undisclosed materials were provided to the USPTO during reexamination of the patent. Despite the disclosure of the additional material, the USPTO still upheld the patent. Judge Newman further raised issue with the fact that the jury’s advisory verdict of no inequitable conduct was disregarded.
This case emphasizes the continued importance of the duty of disclosure when prosecuting patents before the USPTO.
source: Maier & Maier, PLLC
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